IP Counseling and Transactions

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Rep. Matters

Intellectual property poses unique and difficult challenges for businesses, and Irwin IP attorneys possess the skill and knowledge to help clients navigate through these challenges and provide valuable input every step of the way.

 Irwin IP attorneys work closely with clients to thoroughly understand their business needs and goals, identify opportunities and threats, and then develop strategies to enable our clients to cost-effectively accomplish their objectives, minimize their risk, protect and potentially monetize its intellectual property assets, and exploit opportunities.

Irwin IP negotiates licenses, assignments or other intellectual property agreements, such as confidentiality, non-compete, and non-solicitation agreements.  Our deep knowledge of substantive intellectual property law and extensive experience with a wide spectrum of intellectual property challenges and underlying technologies allows us to efficiently address issues of all types and scopes.

Irwin IP also provides freedom-to-operate opinions as appropriate to resolve ambiguity and manage risks and performs supporting non-infringement and invalidity analyses.

Additionally, Irwin IP lawyers have successfully protected their clients’ interests in the context of a myriad of business deals, including research and development and joint venture agreements, outsourcing, mergers, and acquisitions.  Irwin IP as a firm is characterized by its agility, and is well-adapted to fulfilling the unique intellectual property due diligence needs of parties to such corporate transactions.  We understand the frequent time-sensitivity of deal work and, when needed, we work around the clock to meet our clients’ business needs.

Irwin IP has substantial experience supporting major acquisitions and equals or exceeds the quality of analysis and turnaround-time of much larger law firms at a fraction of the cost.

On May 1, the Federal Circuit reversed a district court’s dismissal of Intellectual Tech’s (“IT’s”) patent infringement claims against Zebra Technologies (“Zebra”) for lack of constitutional standing.  The Federal Circuit found that even though IT defaulted on a loan, which gave their bank rights to the patents used as…
A license agreement with broad terms might seem like a good idea, but it could turn into something that you later regret.  On March 25, 2024, the Second Circuit (“the Court”) affirmed that a licensee did not violate a trademark license agreement for “beer” products by selling hard seltzer…
On February 28, 2024, in AlexSam, Inc. v. MasterCard International Incorporated, the Federal Circuit reversed the district court’s summary judgment in favor of MasterCard and remanded.  The Federal Circuit found that AlexSam could maintain its suit because the covenant not to sue provision in the License Agreement (“Agreement”), which…

Representative matters of Irwin IP, or its lawyers, include:

Asset Acquisitions.  Conduct due diligence and asset value analyses to identify, vet, and facilitate acquisition of strategic IP assets for clients.

Biotechnology Investment Due Diligence. Advised prospective investor on the intellectual property position of a potential biotechnology portfolio company specializing in Erythropoetin (EPO) in relation to its chief competitor in the marketplace.

Enterprise Server Technology Due Diligence. Advised acquiring private equity entity on the intellectual property position and risk exposure of the target server technology company in relation to the patent portfolio of its chief competitor in the marketplace.

Fortune 200 Financial Institution.  Counsel for Fortune 200 financial institution in a patent infringement matter, developing defenses in unfiled claims asserted against client’s customers.

Fortune 500 Consumer Products Distributor.  Lead counsel for Fortune 500 company in connection with analyzing hundreds of patents from competitors’ patent portfolios to assess risk associated with importing and distributing a new product.

LKQ Corporation v. Major OEMs.  Lead counsel for LKQ Corporation in negotiating design patent portfolio licenses with Global Fortune 50 companies.

Medical Products Developer and Distributor.  Lead counsel for medical device client in connection with analyzing competitor’s patents to assess non-infringement positions and risk associated with manufacturing related product.

Ongoing Support for Multinational Corporation’s Research and Development Division. Draft and negotiate various agreements including non-disclosure agreements, material transfer agreements, professional services agreements, sponsored research agreements, and project development agreements to support multinational corporation’s research and development division.

Project Frederick. Represented an acquiring private equity entity in connection with its purchase of a regional physical therapy business and its business name and trademarks.

Project Insure. Represented an acquiring private equity entity in connection with its acquisition of a company that provides software solutions that automate the sales, service, and processing of health insurance and group benefits.

Project Katun. Handled all the intellectual property aspects of the spin-off of an international printer toner cartridge subsidiary business from its parent company.

Project Lightening. Represented an acquiring private equity entity in connection with its acquisition of a company that provides software solutions with multi-carrier, multi-line consolidated insurance billing capabilities.

Project Thoreau. Represented an acquiring corporation in connection with the potential acquisition of intellectual property relating to medical devices and pharmaceutical compositions.

Project White. Represented an acquiring private equity entity in connection with its acquisition of an equity interest and voting control in the international leading manufacturer and developer of professional and consumer tooth whitening products and dental devices.

Research Laboratory Equipment Investment Due Diligence. Oversaw a freedom to operate review and advised prospective investor on the competitive patent landscape and associated risk exposure of a potential portfolio company specializing in research laboratory equipment and services.